LA-based La Moda Italiana sues Versace in trademark spat

La Moda Italiana has sued Versace USA and Gianni Versace, S.p.A. in the New York federal court as a preemptive lawsuit in a long term trademark battle between the companies and the Versace 1969 label.

VersaceLos Angeles-based La Moda Italiana became the licensee for all US marketing and distribution of Versace 1969 Abbigliamento Sportivo ("Versace 1969"). It is asking the court to tell the Gianni Versace brand that its use of "Versace" is legal and does not infringe on Versace's well known trademarks.

The Gianni Versace brand has been using its registered "Versace" mark in fashion since 1978. Versace 1969 has no relation to Gianni Versace. Instead, it was started in 2001 by Alessandro Versace who is not related to Gianni or Donatella Versace. Instead, Versace 1969 is distributed by Milan-based In Moda SRL.

Versace 1969 is sold online as well as in two retail locations in Santa Monica and San Francisco. The brand announced it will open a third US retail location in Minneapolis' Mall of America.

According to La Moda Italiana's complaint, the Gianni Versace brand has been making "threats and harassment" about the use of the Versace mark that have tortiously interfered with La Moda Italiana's business. Allegedly retail partners including Bluefly.com have pulled Versace 1969 products to avoid being sued.

There already has been a trademark fight between these brands. Last June, Versace USA and Gianni Versace, S.p.A. filed a trademark infringement lawsuit in federal court in California. That case claimed consumers would be confused between the use of the Versace mark. That case is still pending.

It is likely La Moda Italiana will not prevail. The Versace mark is a strong registered mark that extends out of the fashion world. Versace 1969 does not own any federally registered marks at this time. There are no statements on its website distinguishing itself from the Gianni Versace brand which undoubtedly would confuse consumers.

Versace USA and Gianni Versace, S.p.A. have not yet answered the most recent lawsuit.